Ex Parte Guo et al

Patent Trial and Appeal Board

Mar 27, 2017

12347217 (P.T.A.B. Mar. 27, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/347,217 12/31/2008 Xiaoping Guo 0B-057000US/82410.0307 1707
55962 7590
Wiley Rein LLP
Patent Administration
1776 K Street, NW
Washington, DC 20006
03/29/2017 EXAMINER
SCOTT, ANGELA C
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
03/29/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ptodocket @ wileyrein. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIAOPING GUO, DAVID P. JOHNSON, and
RICHARD E. STEHR1
Appeal 2016-003034
Application 12/347,217
Technology Center 1700
Before: BEVERLY A. FRANKLIN, DONNA M. PRAISS, and
AVELYN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL2
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—39, 45, and 46. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as St. Jude Medical, Atrial
Fibrillation Division, the assignee of the instant application. Appeal Br. 2.
2 In our Decision below, we refer to the Specification (“Spec.”) filed
December 31, 2008, as amended January 29, 2010, the Final Office Action
(“Final Act.”) mailed March 12, 2015, the Appeal Brief (“Appeal Br.”) filed
August 11, 2015, the Examiner’s Answer (“Ans.”) mailed November 30,
2015, and the Reply Brief (“Reply Br.”) filed January 29, 2016.
Appeal 2016-003034
Application 12/347,217
STATEMENT OF CASE
The claims are directed to a biocompatible polycarbonate and
radiopaque polymer composition for use in medical and surgical devices.
Spec. 1. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A biocompatible polymer composition comprising:
poly(bisphenol A carbonate) homopolymer present from
about 61.7 to 90 wt%,
a polyamide or a polyamide-based thermoplastic
elastomer, and
an inorganic radiopaque filler.
Claims Appendix at Appeal Br. 14.
REJECTIONS
The Examiner made the following rejections:
A. Claims 1—10, 14—28, 31, and 36—39 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over
Chakravarti3 in view of Isozaki.4 Final Act. 2.
B. Claims 11—13 and 32—35 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Chakravarti, Isozaki,
and further in view of Chou.5 Id. at 4.
3 Chakravarti et al., US 2007/0293626 Al, published December 20, 2007
(“Chakravarti”).
4 Toshio Isozaki, US 2002/0177648 Al, published November 28, 2002
(“Isozaki”).
5 Chou et al., US 2006/0142489 Al, published June 29, 2006 (“Chou”).
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C. Claims 29 and 30 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Chakravarti, Isozaki, and
further in view of Wang.6 Id.
D. Claims 45 and 46 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Chakravarti in view of Isozaki.
Id. at 5.
Appellants request reversal of Rejections A—D. Appeal Br. 7.
Appellants present argument for claim 1 (Rejection A) and claim 45
(Rejection D), but, Appellants do not present argument for dependent claims
2—39 and 46 separate from what is argued for independent claims 1 and 45.
Id. at 8—12. Therefore, we focus our discussion below on independent
claims 1 (Rejection A) and 45 (Rejection D), which are dispositive of the
issues on appeal.
OPINION
Rejection A — Obviousness (claims 1—10, 14—28, 31, and 36—39)
The Examiner rejects claim 1 as obvious over Chakravarti and
Isozaki. Final Act. 2. The Examiner finds that Chakravarti teaches a
composition having a polycarbonate in the amount claimed, a polyamide
resin, and a filler. Id. at 2—3. The Examiner acknowledges that Chakravarti
does not teach Appellants’ preferred barium sulfate inorganic filler. Id. at 2.
The Examiner additionally finds that Isozaki teaches a polycarbonate resin
composition having an inorganic filler, e.g., barium sulfate. Id. The
Examiner finds that both Chakravarti and Isozaki relate to the same field of
endeavor “namely that of polycarbonate compositions containing fillers used
6 Wang et al., US 2003/0152728 Al, published August 14, 2003 (“Wang”).
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for moldings and parts of electric and electronic appliances as well as
automotive parts (|72 of Isozaki; |39 of Chakravarti et al.).” Id. The
Examiner concludes that one skilled in the art would have had reason to
include the barium sulfate filler of Isozaki in the composition of Chakravarti
because “Isozaki teaches that this amount and type of filler is suitable for use
in polycarbonate compositions useful for moldings for various housings and
parts of electric and electronic appliances as well as automotive parts.” Id.
Appellants present several arguments to oppose the Examiner’s
rejection. Appeal Br. 9-11. Appellants begin by contending that
Chakravarti does not teach “the specific composition of a biocompatible
polymer composition comprising poly(bisphenol A carbonate) homopolymer
present from about 61.7 to 90 wt% and a polyamide or a polyamide-based
thermoplastic elastomer.” Id. at 9.
Appellants fail to identify error in the Examiner’s rejection. As the
Examiner finds (Final Act. 2—3; Ans. 4—5), Table 7, Example 35 of
Chakravarti shows a composition having 75 parts by weight PC and 25 parts
by weight GTR45. Table 1 of Chakravarti describes PC as a “PCP (para-
cumyl phenol) capped polycarbonate (synthesized from polycarbonate
Bisphenol A and phosgene,” which is a bisphenol A carbonate
homopolymer, and GTR45 as a “[cjopolymer of hexamethylene diamine
with isopthalic acid and terepthalic acid,” which is a polyamide. Chakravarti
1100, Table 1. Therefore, the record supports the Examiner’s findings
(Ans. 6), the specific composition of a “biocompatible polymer composition
comprising poly(bisphenol A carbonate) homopolymer present from about
61.7 to 90 wt% [and] and a polyamide or a polyamide-based thermoplastic
elastomer” is taught by Chakravarti. Ans. 6.
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Next, Appellants argue that the “polymer compositions disclosed by
Chakravarti have extremely different mechanical properties than those
currently claimed.” Appeal Br. 9. Appellants compare the compositions of
the instant invention (Table 1) with Tables 2 and 3 of Chakravarti and offer
the testimony of Dr. Xiaoping Guo (“Guo Decl.”) who concludes that
“significantly higher tensile modulus of the Chakravarti compounds
indicates that the materials disclosed in Chakravarti are significantly less
flexible than those claimed.” Guo Decl. | 8.
Appellants’ argument that the claimed polymer possesses different
mechanical properties is not persuasive of error by the Examiner. First,
claim 1 (unlike claim 45 discussed below) does not recite any particular
mechanical properties. As unclaimed limitations, improved mechanical
properties provide no basis to distinguish the instant claims from the prior
art. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[Appellant’s
arguments fail from the outset because . . . they are not based on limitations
appearing in the claims.”). Second, the compositions identified by
Appellants (Appeal Br. 9) as having a Young’s modulus that exceeds the
claim limitations are not the same compositions as claimed or identified by
the Examiner as meeting the claimed components. Compare Chakravarti
Tables 2 and 3 with Table 7. As the Examiner explains, the “Appellant is
comparing apples to oranges in this instance.” Ans. 6.
Appellants then urge that Chakravarti does not teach the claimed
inorganic radiopaque filler and that one of ordinary skill in the art would not
have combined Chakravarti with the barium sulfate filler of Isozaki “because
as the Examiner admits (Office action, p. 7.), the mechanical properties of
Chakravarti would thereby be altered, and the alteration would render the
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resulting compounds undesirable.” Appeal Br. 10. Appellants allege, “the
Examiner’s proposed modification would thus render Chakravarti
unsatisfactory for is intended purpose.” Id.
Appellants do not persuade us of reversible error. We agree with the
Examiner (Appeal Br. 6—7), that because the composition of Chakravarti
does not include all the components of the claimed invention—specifically,
the radiopaque filler—Chakravarti alone may possess different mechanical
properties as compared to the claimed invention. But, and the Examiner
does not suggest otherwise, that does not mean that the inclusion of a
radiopaque filler will render Chakravarti unsatisfactory for its intended
purpose. If a proposed modification would render the prior art being
modified unsatisfactory for its intended purpose, then there is no suggestion
or motivation to make the proposed modification. In re Gordon, 733 F.2d
900, 902 (Fed. Cir. 1984). Here however, Chakravarti contemplates using
fillers within the disclosed compositions. Chakravarti | 57. Thus, the
addition of a filler, known to be useful for similar compositions and
purposes, like the barium sulfate of Isozaki, would be expected to produce a
satisfactory, as opposed to unsatisfactory, result. Furthermore, Appellants
provide no evidence to the contrary. Rather, Appellants rely upon attorney
argument but, “[cjounsel’s argument cannot take the place of evidence
lacking in the record.” Estee Lauder Inc. v. L ’Oreal, S.A., 129 F.3d 588, 595
(Fed. Cir. 1997).
Finally, Appellants assert that “[tjhere would be no motivation or
suggestion to combine Isozaki with Chakravarti as no benefits would be
expected to be achieved. In fact, the opposite would be true—one of
ordinary skill in the art would expect further experimentation would be
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necessary to achieve the desired properties.” Appeal Br. 11. Appellants
contend that only through improper hindsight can the combination be made.
Id.
Appellants’ argument does not persuade us of error. The “[ejxpress
suggestion to substitute one equivalent for another need not be present to
render such substitution obvious.” In re Font, 675 F.2d 297, 301 (CCPA
1982); In re Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997) (“Because the
applicants merely substituted one element known in the art for a known
equivalent, this court affirms [the rejection for obviousness].”). Here, the
Examiner aptly finds that both Chakravarti and Isozaki teach polycarbonate
compositions, including fillers, which are useful for “moldings for various
housings and parts of electric and electronic appliances as well as
automotive parts.” Final Act. 3. While Chakravarti does not expressly
identify a specific filler material to be used (Chakravarti 157), Isozaki
teaches inorganic fillers, such as barium sulfate, may be used (Isozaki | 67)
for similar compositions having a similar purpose. Thus, the Examiner
properly relies on the teachings of Chakravarti and Isozaki to substitute a
known element according to its established function to yield a predictable
result. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”).
Moreover, we find no evidence that the Examiner relies on
impermissible hindsight reasoning as the Examiner’s articulated reasons for
combining the teachings of Chakravarti and Isozaki are supported by the
prior art disclosures. See, e.g., Sensonics, Inc. v. Aerosonic Corp., 81 F.3d
1566, 1570 (Fed. Cir. 1996). Moreover, Appellants do not identify any
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knowledge relied upon by the Examiner that was gleaned only from the
Appellants’ disclosure and was not within the level of skill in the art at the
time of the invention. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971).
Rejection D — Obviousness (claims 45 and 46)
The Examiner rejects claim 45 as obvious over Chakravarti and
Isozaki. Final Act. 5. Independent claim 45 is similar to independent claim
1, but additionally requires that “the biocompatible polymer composition has
a Young’s modulus from about 125.7 to about 164.0 ksi.” Claims Appendix
at Appeal Br. 18. The Examiner finds that because “the references teach all
of the claimed ingredients and amounts, and a substantially similar process .
. . . the claimed effects and physical properties, i.e., a Young’s modulus from
about 125.7 to about 164.0, would implicitly be achieved by [the] resulting
composition.” Final Act. 6.
Appellants, in addition to the arguments presented for Rejection A
above, argue that the Young’s modulus is not taught by Chakravarti and, in
fact, “all of the examples disclosed by Chakravarti have a Young’s modulus
about 2—3 times greater than that of the currently claimed invention.”
Appeal Br. 12.
Appellants do not convince us of reversible error by the Examiner.
As explained above (supra p. 5), Appellants’ assertion that the examples in
Tables 2 and 3 of Chakravarti have a Young’s modulus about 2—3 times
greater than that of the currently claimed invention, is not an appropriate
comparison because those examples do not teach the claimed bisphenol A
carbonate, unlike Example 35 of Table 7, which the Examiner uses in
making the rejection. Compare Chakravarti Tables 2 and 3 with Table 7.
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Moreover, “[wjhere, as here, the claimed and prior art products are identical
or substantially identical, or are produced by identical or substantially
identical processes, the PTO can require an applicant to prove that the prior
art products do not necessarily or inherently possess the characteristics of his
claimed product.” In re Best, 562 F.2d 1252, 1256 (CCPA 1977).
Appellants have failed to show, through evidence or argument, that the
polycarbonate and polyamide blend of Example 35 of Chakravarti, in
combination with the barium sulfate filler of Isozaki, would not possess the
claimed Young’s modulus. Thus, we find no error in the Examiner’s
rejections.
CONCLUSION
The Examiner did not reversibly err in rejecting claims 1—10, 14—28,
31, and 36—39 under 35 U.S.C. § 103(a) as being unpatentable over
Chakravarti in view of Isozaki.
The Examiner did not reversibly err in rejecting claims 11—13 and 32—
35 under 35 U.S.C. § 103(a) as being unpatentable over Chakravarti,
Isozaki, and further in view of Chou.
The Examiner did not reversibly err in rejecting claims 29 and 30
under 35 U.S.C. § 103(a) as being unpatentable over Chakravarti, Isozaki,
and further in view of Wang.
The Examiner did not reversibly err in rejecting claims 45 and 46
under 35 U.S.C. § 103(a) as being unpatentable over Chakravarti in view of
Isozaki. Id. at 5.
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DECISION
For the above reasons, the Examiner’s rejection of claims 1—39, 45,
and 46 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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